April 13, 2025 • 17 mins
The million-dollar question every inventor asks: "How much will a patent cost?" In this illuminating episode, patent attorney Mario Milano cuts through the confusion around patent expenses, providing a clear roadmap of what to expect from initial filing through maintenance.
We dive deep into the true cost ranges for both utility patents ($5,000-$10,000) and design patents ($2,000-$5,000), explaining why these figures fluctuate based on invention complexity, documentation quality, and even company size. Mario shares practical insider strategies for significantly reducing these costs without compromising protection. Most importantly, he warns against the dangerous allure of too-good-to-be-true $99 patent services that can ultimately cost inventors their entire intellectual property rights.
The conversation explores the strategic financial benefits of provisional patents as market-testing tools, the often-overlooked expenses of responding to Patent Office rejections, and the long-term maintenance fees required to keep patents in force. Through a fascinating case study about Smuckers' controversial peanut butter and jelly sandwich patent, we demonstrate how seemingly simple innovations can sometimes receive valuable patent protection.
Whether you're a solo inventor watching your budget or a startup allocating limited resources, this episode delivers crucial guidance on making smart patent investment decisions. Don't file another application until you've heard Mario's expert advice on timing your patent application, preparing thorough documentation, and avoiding costly pitfalls in the patent process.
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Episode Transcript
Available transcripts are automatically generated. Complete accuracy is not guaranteed.
Speaker 1 (00:01):
You're listening to Secure your Creations Podcast,
where innovation meets legalprotection.
Hosted by IP attorney MarioMilano, this show cuts through
the legal noise and offers realinsights to protect your patents
, trademarks, copyrights andtrade secrets.
Whether you're an inventor,entrepreneur or business leader,
we help protect what you'vebuilt, capitalize on on your
(00:24):
creations and stay one stepahead of the competition.
Welcome to Secure yourCreations podcast.
Let's get started.
Speaker 2 (00:33):
And let's get started .
Indeed, I'm Craig Andrews andI'm here with Mario Milano.
Hi Mario, how are you doingtoday?
Speaker 3 (00:39):
Pretty good, Craig.
How are you doing?
Speaker 2 (00:41):
I'm doing great, sir.
So today what we're going totalk about is the cost of
patents and I know in a lot ofour conversations you're getting
constantly people who arecontacting you calling you and
said, ok, just just cut to thechase, what's the cost of this
thing?
Right, and I know that you saidit's not that simple.
It's not that simple.
Speaker 3 (01:00):
Yeah.
Speaker 2 (01:01):
Yeah, tell me a broad level scope here of how you
kind of answer that whensomebody asks you that question.
Speaker 3 (01:07):
Yeah.
So first I try to understandwhat kind of patent are they
looking for?
You know, a design patent iscertainly going to be a lot
cheaper than a utility patent.
And even we break it down evenfurther as far as, like, what is
the technology?
You know, if it's somethingthat's very complicated, like an
MRI machine, you know we'regoing to have to include a lot
of detail in how that thingworks.
(01:27):
But if it's somethingrelatively simple, like a
bicycle, well then you know wedon't have to include as much
detail, which means it takes theattorney less time to draft the
application.
Speaker 2 (01:38):
Okay, great.
So in terms of the mainexpenses that an inventor or,
I'm sorry, an investor inventor,excuse me should expect when it
comes to patent, the patentprocess, tell me a little bit
about that.
Speaker 3 (01:51):
Yeah, the main expense is going to be right at
the beginning when you're goingto ask the attorney to prepare
the application for you.
That's going to be the mostexpensive part of the endeavor.
That's the most time intensiveas far as attorney time, and so
that's going to be the mostexpensive part, typically for a
relatively simple mechanicalinvention, you know, $5,000 to
(02:12):
$10,000 to draft the applicationand get it submitted is about
where it would be.
For utility applications, adesign application is typically
around, I would say, between$2,000 and $5,000, depending on
how many figures we submit.
Submit to prepare and submitthat application.
Speaker 2 (02:27):
That makes sense.
I love how you get directly tothe point right Now.
They have questions.
They shouldn't have any morequestions because you answered
it.
In terms of the pricing thatyou gave there, what would be
the difference between thegovernment filing and the
attorney fees?
Is that all in that price or isthere something different there
?
Speaker 3 (02:44):
and the attorney fees .
Is that all in that price or isthere something different there
?
Yeah, that would typicallyinclude the government fees as
well.
You know, the government feesvary a little bit, as far as you
know, if you're a large entityhaving more than 500 employees,
if you have less than 500employees or if you're a solo
inventor and this is your firsttime filing a patent application
, there's different fee levelsthere.
But for a solo or a smallentity, then the $5,000 to
(03:08):
$10,000 will include the USfiling fees.
Speaker 2 (03:11):
So let's stick with those solo inventors or so forth
, or just first-time people.
Is there a way to reduce thecost for them?
I'm sure you have a lot ofstrategies.
Is there a way to reduce thecost for these patent
applications?
You have a lot of strategies.
Speaker 3 (03:25):
Is there a way to reduce the cost for them for
these patent applications?
Yeah, definitely.
You know, the thing that willhelp the most is if we have a
detailed description of theinvention, if the inventor can
hand me a detailed descriptionof their invention.
And so you know, sometimesinventors come to me and they
hand me two or three paragraphsand one or two hand-drawn
figures and they ask me tocreate a patent application from
that, and I'm happy to do that.
Other times they'll have CADfiles for the computer drawings
(03:49):
showing their invention in adetailed CAD file.
That'll certainly save me sometime from having to recreate the
drawings myself, and the moredetail that they have into their
write-up of their invention,you know, then the less time
that it will take me to teaseout all the extra information.
You know I already haveeverything that I need right
(04:10):
there.
It's easy for me to thenconvert that over into a
application okay, so just forthe record, let's stay on that.
Speaker 2 (04:17):
So the person who gave you a couple paragraphs on
a couple drawings causes youmore work?
How exactly?
Speaker 3 (04:24):
yeah, well then, I just have to fill in a lot more
of the details by myself.
You know, uh, sometimes thedetailed write-up will have
information about here's what'salready out there.
Here's why ours is animprovement.
Here's the other things that wetried that didn't work, and so
this is why we arrived at thefinal embodiment that we have.
We can always get thatinformation, but the difference
(04:51):
between the inventor going anddoing that back-end research
themselves versus me having todo it as an attorney, I charge
for my time, so the less timethat I have to spend researching
the prior art, the better offwe are spend researching the
prior art, the better off we are.
Speaker 2 (05:06):
So, just as we move to this next question that was
submitted to you, that we'retrying to put out to the public,
you're talking about the costdifference between a provisional
patent and a non-provisionalpatent.
Now, before you start, tell mewhat a provisional patent is.
Speaker 3 (05:22):
Yeah, so the provisional patent won't
actually turn into enforceablepatent rights.
The provisional patent is aplaceholder that you file.
It doesn't have to be asdetailed or it doesn't have to.
It doesn't have to fulfill allthe requirements of a
non-provisional application, andso when we file that, that
gives you up to one year toconvert it to a non-provisional.
(05:44):
In that year you can publiclydisclose your invention, you can
start making sales, go toinvestors if you want to get
outside investments and furtherimprove your product, and so
it's a good opportunity forpeople to see if their invention
is actually going to becommercially feasible, if
they're going to be able to makethese sales and it's worthwhile
to actually go forward with thenon-provisional application or
(06:07):
if they should go another route.
Speaker 2 (06:10):
So the provisional is kind of like a try before you
buy, and the non-provisional isactually the full bore patent.
Speaker 3 (06:17):
Yep, yep.
And so some you know someinventors say okay, I'm already
selling my product, I want toget a patent as fast as I can.
Then, okay, let's go right withthe non-provisional so we can
get this thing issued as fast aswe can.
Other clients are, you know,starting to test the market, or
they think that they're going tobe further improving their
product, and then theprovisional would be the way to
(06:38):
go.
Sometimes the provisional ischeaper.
But my advice is always let'sfile the provisional application
.
Let's draft it up as if it's anon-provisional.
That way we're ready to go whenit's time to convert over to
the non-provisional.
We already have tons of detailin there.
There's not going to be aquestion of if the patent claims
(06:59):
are supported at a later date.
That way we have all theinformation in there.
Speaker 2 (07:03):
And is there a cost difference between the two?
Speaker 3 (07:06):
Yeah, the filing fees are a little bit less for a
provisional application than fora non-provisional and because
the provisional doesn't have tocomply with all the USPTO rules.
For a non-provisionalapplication, you know we don't
have to have formal drawings, wedon't have to have claims if we
don't want to.
So you know we can draft it alittle bit faster if we want.
(07:28):
You know, particularly if aclient says, look, I just want
to.
You know, I want somethingsolid but I want to get it on
file.
You know, for the mostreasonable fee that I can, and
sure we have areas where we can,though maybe not include as
much detail.
Speaker 2 (07:41):
Is there an example that you can give me, a real
life example of a provisionalthat you converted to a
non-provisional?
Speaker 3 (07:49):
Yeah, they're pretty common that they happen.
Tons of medical devices wherewe'll file the provisional.
It's helpful because one of myfavorite ones, somebody came to
me they wanted to file theprovisional.
Uh, you know it's helpfulbecause, uh, the one of my
favorite ones, you know somebodycame to me they wanted to file
the provisional.
We did that.
We did a search after we filedthe provisional, which isn't the
traditional route, you know,usually we do the search first,
but so we filed the provisional.
(08:10):
We did the search.
We said, oh, you know, somebodyelse has a patent that's very
similar to this.
We might be you know, on thinice if we go ahead and release
this product commercially.
And so then the client wentback and they said, okay, let me
modify it so I'm not infringinganybody else's patent, or not
even at risk of infringinganybody else's patent, and then
we incorporated those changesinto the application so that we
(08:31):
had the original device from theprovisional application as well
as the updated device in thenon-provisional application.
It really opened up thepossibility of the way that we
claim things when we are filingany continuations, and it really
gives you a lot of options tomake sure that you're not only
covering your device but you'remaking sure that competitors can
(08:53):
come near it as well.
Speaker 2 (08:54):
That makes a lot of sense.
So let's move on a little bithere and let's talk about
maintenance fee costs and whendo they need to be paid.
Is there, is there a guidelineto that?
Speaker 3 (09:03):
yeah uh.
So for design patents nomaintenance fees, so uh once you
move through application andfiling and get it allowed.
Uh, then you know, no moremaintenance fees in the uspto.
Then, yeah, there's uhmaintenance fees and it's
generally at like the five andten year and 15 year mark um,
and you know those, uh, it givesyou an opportunity to.
(09:27):
You know, five years, sevenyears you're going to be, uh,
moving forward.
Hopefully you're making somesales or you're licensing your
technology and you know,hopefully it's worthwhile to go
ahead and pay those maintenancefees.
Speaker 2 (09:39):
Mary's makes a lot of sense, make a lot of sense.
So so nobody likes surprisecosts, right?
A cost of war doesn't matterwhat it is, whether it be a car
and a surprise cost, whether itbe you're buying a house and
somebody with a surprise cost.
Are the surprise costs involvedin the patent filings?
Speaker 3 (09:56):
Yeah, not necessarily a surprise, but one that people
might not anticipate is youknow we file the application and
you know that's an upfront fee,and then typically for design
patent or utility patent, it'sgoing to get rejected at least
once.
It doesn't mean we have tostart over from scratch, it's a
part of the normal process.
I would say something like 90%of all applications get rejected
(10:20):
at least once and when thathappens we adjust our claims a
little bit, or for a designpatent, we adjust the drawings,
we resubmit our response andthen hopefully we get the
application allowed.
At that point I would say oneto two office actions is
probably about normal, so it'snot something to get worried
about.
You should still be able to geta patent, uh, but you know it is
(10:41):
a cost that some people mightnot be aware of that you're
probably going to encounter downthe road.
For a design patent, you knowthe responses are relatively
well.
They're cheaper than theutility patent application
responses.
A design response is typicallyaround, um, I would say, between
$750 and up to maybe $2,000,depending on how involved it is.
(11:03):
The utility patent response,you know, on the lower end
that's probably about $1,000,all the way up to maybe $2,500
for something very for a reallyinvolved response.
Speaker 2 (11:16):
So one of the things I would say is this response.
So one of the things I wouldsay is this when we're talking
about cost as a whole, somethingI want you to comment on here a
little bit is the cost of doingit right and the cost of doing
it on your own and how that costkind of plays with, you know,
the decision of doing it or not.
Somebody might say ten thousanddollars is a little bit of a
(11:38):
sticker shock.
I'm surprised when I'm seeingpeople online who might do it
for ninety, nine dollars.
Right, tell me a little bitabout your comment and your
feedback, after having so muchexperience in this over the
years.
Speaker 3 (11:50):
Yeah.
So I've noticed that the shopsthat are saying they'll do it
for you know, submit yourapplication for $99, that's all
they're doing is submitting theapplication.
They're not reviewing it foryou, they're not drafting the
application for you at all.
They'll tell you that you know.
They usually give you a formthat says here's the
requirements.
You send it into them, you sendyour application over to them
(12:12):
and then they submit it.
The thing is, once you submityour patent application, you
really can't go back and changethe substance of the application
.
Yes, you can amend your claimswhen you're submitting a
response, but you can't add anyadditional details to the
description of your invention.
And so you're not going to findout about that until a year and
a half, two years, down theline after you submit your
(12:34):
application, when the patentoffice finally gets around to
examining your application.
That's when you find out oh,you have, you know, you have a
non-enabling disclosure, is whatit's called, which basically
means that you talked about yourinvention but you didn't
describe it in sufficient detailto allow somebody else to make
and use your invention, and youcan't really cure that.
(12:55):
You can submit arguments andsay, oh, I think somebody could,
but if the detail isn't inthere, then you're out of luck.
So you might think that you'resaving some money up front, but
really it's costing you thewhole patent at the end, Wow.
Speaker 2 (13:10):
So again, this is going to lead to this next
question, which is beautiful.
Okay.
So for startups, right, Do yousuggest and I know we talked
about this a little bit inprevious episodes do you suggest
, a budget for the patent asthey're starting their process,
or do you suggest that theypatent it after they kind of got
the ball moving a little bitFrom a cost perspective?
(13:31):
What's the better angle to gothere?
Speaker 3 (13:34):
Yeah, so in the US you can start to sell your
product, you can release itcommercially and you have up to
one year after after you releaseit, you have up to one year to
file your patent application.
If you have to make a choicebetween releasing your product
and filing your patent, wellthen you know you're probably
going to want to start sellingyour product to make some money,
rather than filing anapplication and not being able
(13:56):
to you know, not being able torelease the product at all.
Speaker 2 (14:01):
That makes sense.
That makes sense.
So what I'm going to introduceright now is new to the podcast
is we have a segment called isit patentable, and what we'll do
in there to set this up is thatevery episode, mario will give
us an example of a product thatmight be common, maybe not
common, and we're going tounload it or unpack it to find
(14:23):
out if it's going to bepatentable in the eyes of a
patent attorney right here infront of you.
And the first example thatwe're going to use is I believe
Mario has the classic peanutbutter and jelly sandwich and to
find out which is hard tobelieve, right?
Is it patentable, mario?
What's your take on that?
Speaker 3 (14:42):
Yeah, so, as some people will recall, back in the
late 90s the Smuckers did get apatent on a peanut butter and
jelly sandwich.
The Smuckers did get a patenton a peanut butter and jelly
sandwich and so they talkedabout, you know, bread and some
filling and sealing the edges sothat the peanut butter and
jelly didn't leak out of thesandwich, and this was for
(15:03):
basically what is theuncrustable sandwich, which are
delicious, and so you know youthink you know I grew up eating
peanut butter and jellysandwiches all the time.
It's an old technology that youwould think that maybe it's not
patentable.
But the sealing of the edgespart was what carried the day
for them and did and ultimatelywas allowed as a patent.
(15:25):
There was a bit of controversy.
Eventually the patent was notallowed or deemed to be invalid
after it was issued, becausethere was such public outcry
about you know how can youpatent a peanut butter and jelly
sandwich?
But from a patent attorney'sperspective, they had claims
that the examiner didn't find tobe obvious.
(15:46):
So it was patentable.
Speaker 2 (15:48):
Wow, it was patentable and I love
Uncrustables.
In fact, I had two of themyesterday.
Speaker 3 (15:55):
I love those two.
Speaker 2 (15:56):
So, as we conclude the show here, what I want
everybody to consider is if youhave any questions, whether
you're peanut butter or jellysandwich, or your medical device
or your wheelchair, can bepatentable reach out to Mario at
Milano IP and he'll be sure todo a free consultation with you
so that you can get an idea ofwhere you sit.
Mario, do you have anything toadd to that in reference to
(16:16):
people reaching out to you?
Speaker 3 (16:18):
Yeah, always happy to talk about patents or any other
intellectual property needs.
Whether it's questions abouttheir own devices or questions
about other people's IP, Happyto talk.
Speaker 2 (16:27):
Awesome, and so this concludes our episode of the
Secure your Creations podcast,even if it's a peanut butter and
jelly sandwich, and we willtalk to you guys next time.
Speaker 1 (16:39):
Have a good day.
Thanks for tuning in to theSecure your Creations podcast.
Make sure to subscribe andfollow on YouTube and your
favorite podcast app so younever miss an episode.
Leave a comment, like or review.
We'd love to hear your thoughtsor answer any questions.
For more expert legal advice,visit wwwmilanoipcom.
(17:00):
Until next time, is itpatentable?
You're listening to Secure your Creations Podcast,
where innovation meets legalprotection.
Hosted by IP attorney MarioMilano, this show cuts through
the legal noise and offers realinsights to protect your patents
, trademarks, copyrights andtrade secrets.
Whether you're an inventor,entrepreneur or business leader,
we help protect what you'vebuilt, capitalize on on your
(00:24):
creations and stay one stepahead of the competition.
Welcome to Secure yourCreations podcast.
Let's get started.
Speaker 2 (00:33):
And let's get started .
Indeed, I'm Craig Andrews andI'm here with Mario Milano.
Hi Mario, how are you doingtoday?
Speaker 3 (00:39):
Pretty good, Craig.
How are you doing?
Speaker 2 (00:41):
I'm doing great, sir.
So today what we're going totalk about is the cost of
patents and I know in a lot ofour conversations you're getting
constantly people who arecontacting you calling you and
said, ok, just just cut to thechase, what's the cost of this
thing?
Right, and I know that you saidit's not that simple.
It's not that simple.
Speaker 3 (01:00):
Yeah.
Speaker 2 (01:01):
Yeah, tell me a broad level scope here of how you
kind of answer that whensomebody asks you that question.
Speaker 3 (01:07):
Yeah.
So first I try to understandwhat kind of patent are they
looking for?
You know, a design patent iscertainly going to be a lot
cheaper than a utility patent.
And even we break it down evenfurther as far as, like, what is
the technology?
You know, if it's somethingthat's very complicated, like an
MRI machine, you know we'regoing to have to include a lot
of detail in how that thingworks.
(01:27):
But if it's somethingrelatively simple, like a
bicycle, well then you know wedon't have to include as much
detail, which means it takes theattorney less time to draft the
application.
Speaker 2 (01:38):
Okay, great.
So in terms of the mainexpenses that an inventor or,
I'm sorry, an investor inventor,excuse me should expect when it
comes to patent, the patentprocess, tell me a little bit
about that.
Speaker 3 (01:51):
Yeah, the main expense is going to be right at
the beginning when you're goingto ask the attorney to prepare
the application for you.
That's going to be the mostexpensive part of the endeavor.
That's the most time intensiveas far as attorney time, and so
that's going to be the mostexpensive part, typically for a
relatively simple mechanicalinvention, you know, $5,000 to
(02:12):
$10,000 to draft the applicationand get it submitted is about
where it would be.
For utility applications, adesign application is typically
around, I would say, between$2,000 and $5,000, depending on
how many figures we submit.
Submit to prepare and submitthat application.
Speaker 2 (02:27):
That makes sense.
I love how you get directly tothe point right Now.
They have questions.
They shouldn't have any morequestions because you answered
it.
In terms of the pricing thatyou gave there, what would be
the difference between thegovernment filing and the
attorney fees?
Is that all in that price or isthere something different there
?
Speaker 3 (02:44):
and the attorney fees .
Is that all in that price or isthere something different there
?
Yeah, that would typicallyinclude the government fees as
well.
You know, the government feesvary a little bit, as far as you
know, if you're a large entityhaving more than 500 employees,
if you have less than 500employees or if you're a solo
inventor and this is your firsttime filing a patent application
, there's different fee levelsthere.
But for a solo or a smallentity, then the $5,000 to
(03:08):
$10,000 will include the USfiling fees.
Speaker 2 (03:11):
So let's stick with those solo inventors or so forth
, or just first-time people.
Is there a way to reduce thecost for them?
I'm sure you have a lot ofstrategies.
Is there a way to reduce thecost for these patent
applications?
You have a lot of strategies.
Speaker 3 (03:25):
Is there a way to reduce the cost for them for
these patent applications?
Yeah, definitely.
You know, the thing that willhelp the most is if we have a
detailed description of theinvention, if the inventor can
hand me a detailed descriptionof their invention.
And so you know, sometimesinventors come to me and they
hand me two or three paragraphsand one or two hand-drawn
figures and they ask me tocreate a patent application from
that, and I'm happy to do that.
Other times they'll have CADfiles for the computer drawings
(03:49):
showing their invention in adetailed CAD file.
That'll certainly save me sometime from having to recreate the
drawings myself, and the moredetail that they have into their
write-up of their invention,you know, then the less time
that it will take me to teaseout all the extra information.
You know I already haveeverything that I need right
(04:10):
there.
It's easy for me to thenconvert that over into a
application okay, so just forthe record, let's stay on that.
Speaker 2 (04:17):
So the person who gave you a couple paragraphs on
a couple drawings causes youmore work?
How exactly?
Speaker 3 (04:24):
yeah, well then, I just have to fill in a lot more
of the details by myself.
You know, uh, sometimes thedetailed write-up will have
information about here's what'salready out there.
Here's why ours is animprovement.
Here's the other things that wetried that didn't work, and so
this is why we arrived at thefinal embodiment that we have.
We can always get thatinformation, but the difference
(04:51):
between the inventor going anddoing that back-end research
themselves versus me having todo it as an attorney, I charge
for my time, so the less timethat I have to spend researching
the prior art, the better offwe are spend researching the
prior art, the better off we are.
Speaker 2 (05:06):
So, just as we move to this next question that was
submitted to you, that we'retrying to put out to the public,
you're talking about the costdifference between a provisional
patent and a non-provisionalpatent.
Now, before you start, tell mewhat a provisional patent is.
Speaker 3 (05:22):
Yeah, so the provisional patent won't
actually turn into enforceablepatent rights.
The provisional patent is aplaceholder that you file.
It doesn't have to be asdetailed or it doesn't have to.
It doesn't have to fulfill allthe requirements of a
non-provisional application, andso when we file that, that
gives you up to one year toconvert it to a non-provisional.
(05:44):
In that year you can publiclydisclose your invention, you can
start making sales, go toinvestors if you want to get
outside investments and furtherimprove your product, and so
it's a good opportunity forpeople to see if their invention
is actually going to becommercially feasible, if
they're going to be able to makethese sales and it's worthwhile
to actually go forward with thenon-provisional application or
(06:07):
if they should go another route.
Speaker 2 (06:10):
So the provisional is kind of like a try before you
buy, and the non-provisional isactually the full bore patent.
Speaker 3 (06:17):
Yep, yep.
And so some you know someinventors say okay, I'm already
selling my product, I want toget a patent as fast as I can.
Then, okay, let's go right withthe non-provisional so we can
get this thing issued as fast aswe can.
Other clients are, you know,starting to test the market, or
they think that they're going tobe further improving their
product, and then theprovisional would be the way to
(06:38):
go.
Sometimes the provisional ischeaper.
But my advice is always let'sfile the provisional application
.
Let's draft it up as if it's anon-provisional.
That way we're ready to go whenit's time to convert over to
the non-provisional.
We already have tons of detailin there.
There's not going to be aquestion of if the patent claims
(06:59):
are supported at a later date.
That way we have all theinformation in there.
Speaker 2 (07:03):
And is there a cost difference between the two?
Speaker 3 (07:06):
Yeah, the filing fees are a little bit less for a
provisional application than fora non-provisional and because
the provisional doesn't have tocomply with all the USPTO rules.
For a non-provisionalapplication, you know we don't
have to have formal drawings, wedon't have to have claims if we
don't want to.
So you know we can draft it alittle bit faster if we want.
(07:28):
You know, particularly if aclient says, look, I just want
to.
You know, I want somethingsolid but I want to get it on
file.
You know, for the mostreasonable fee that I can, and
sure we have areas where we can,though maybe not include as
much detail.
Speaker 2 (07:41):
Is there an example that you can give me, a real
life example of a provisionalthat you converted to a
non-provisional?
Speaker 3 (07:49):
Yeah, they're pretty common that they happen.
Tons of medical devices wherewe'll file the provisional.
It's helpful because one of myfavorite ones, somebody came to
me they wanted to file theprovisional.
Uh, you know it's helpfulbecause, uh, the one of my
favorite ones, you know somebodycame to me they wanted to file
the provisional.
We did that.
We did a search after we filedthe provisional, which isn't the
traditional route, you know,usually we do the search first,
but so we filed the provisional.
(08:10):
We did the search.
We said, oh, you know, somebodyelse has a patent that's very
similar to this.
We might be you know, on thinice if we go ahead and release
this product commercially.
And so then the client wentback and they said, okay, let me
modify it so I'm not infringinganybody else's patent, or not
even at risk of infringinganybody else's patent, and then
we incorporated those changesinto the application so that we
(08:31):
had the original device from theprovisional application as well
as the updated device in thenon-provisional application.
It really opened up thepossibility of the way that we
claim things when we are filingany continuations, and it really
gives you a lot of options tomake sure that you're not only
covering your device but you'remaking sure that competitors can
(08:53):
come near it as well.
Speaker 2 (08:54):
That makes a lot of sense.
So let's move on a little bithere and let's talk about
maintenance fee costs and whendo they need to be paid.
Is there, is there a guidelineto that?
Speaker 3 (09:03):
yeah uh.
So for design patents nomaintenance fees, so uh once you
move through application andfiling and get it allowed.
Uh, then you know, no moremaintenance fees in the uspto.
Then, yeah, there's uhmaintenance fees and it's
generally at like the five andten year and 15 year mark um,
and you know those, uh, it givesyou an opportunity to.
(09:27):
You know, five years, sevenyears you're going to be, uh,
moving forward.
Hopefully you're making somesales or you're licensing your
technology and you know,hopefully it's worthwhile to go
ahead and pay those maintenancefees.
Speaker 2 (09:39):
Mary's makes a lot of sense, make a lot of sense.
So so nobody likes surprisecosts, right?
A cost of war doesn't matterwhat it is, whether it be a car
and a surprise cost, whether itbe you're buying a house and
somebody with a surprise cost.
Are the surprise costs involvedin the patent filings?
Speaker 3 (09:56):
Yeah, not necessarily a surprise, but one that people
might not anticipate is youknow we file the application and
you know that's an upfront fee,and then typically for design
patent or utility patent, it'sgoing to get rejected at least
once.
It doesn't mean we have tostart over from scratch, it's a
part of the normal process.
I would say something like 90%of all applications get rejected
(10:20):
at least once and when thathappens we adjust our claims a
little bit, or for a designpatent, we adjust the drawings,
we resubmit our response andthen hopefully we get the
application allowed.
At that point I would say oneto two office actions is
probably about normal, so it'snot something to get worried
about.
You should still be able to geta patent, uh, but you know it is
(10:41):
a cost that some people mightnot be aware of that you're
probably going to encounter downthe road.
For a design patent, you knowthe responses are relatively
well.
They're cheaper than theutility patent application
responses.
A design response is typicallyaround, um, I would say, between
$750 and up to maybe $2,000,depending on how involved it is.
(11:03):
The utility patent response,you know, on the lower end
that's probably about $1,000,all the way up to maybe $2,500
for something very for a reallyinvolved response.
Speaker 2 (11:16):
So one of the things I would say is this response.
So one of the things I wouldsay is this when we're talking
about cost as a whole, somethingI want you to comment on here a
little bit is the cost of doingit right and the cost of doing
it on your own and how that costkind of plays with, you know,
the decision of doing it or not.
Somebody might say ten thousanddollars is a little bit of a
(11:38):
sticker shock.
I'm surprised when I'm seeingpeople online who might do it
for ninety, nine dollars.
Right, tell me a little bitabout your comment and your
feedback, after having so muchexperience in this over the
years.
Speaker 3 (11:50):
Yeah.
So I've noticed that the shopsthat are saying they'll do it
for you know, submit yourapplication for $99, that's all
they're doing is submitting theapplication.
They're not reviewing it foryou, they're not drafting the
application for you at all.
They'll tell you that you know.
They usually give you a formthat says here's the
requirements.
You send it into them, you sendyour application over to them
(12:12):
and then they submit it.
The thing is, once you submityour patent application, you
really can't go back and changethe substance of the application
.
Yes, you can amend your claimswhen you're submitting a
response, but you can't add anyadditional details to the
description of your invention.
And so you're not going to findout about that until a year and
a half, two years, down theline after you submit your
(12:34):
application, when the patentoffice finally gets around to
examining your application.
That's when you find out oh,you have, you know, you have a
non-enabling disclosure, is whatit's called, which basically
means that you talked about yourinvention but you didn't
describe it in sufficient detailto allow somebody else to make
and use your invention, and youcan't really cure that.
(12:55):
You can submit arguments andsay, oh, I think somebody could,
but if the detail isn't inthere, then you're out of luck.
So you might think that you'resaving some money up front, but
really it's costing you thewhole patent at the end, Wow.
Speaker 2 (13:10):
So again, this is going to lead to this next
question, which is beautiful.
Okay.
So for startups, right, Do yousuggest and I know we talked
about this a little bit inprevious episodes do you suggest
, a budget for the patent asthey're starting their process,
or do you suggest that theypatent it after they kind of got
the ball moving a little bitFrom a cost perspective?
(13:31):
What's the better angle to gothere?
Speaker 3 (13:34):
Yeah, so in the US you can start to sell your
product, you can release itcommercially and you have up to
one year after after you releaseit, you have up to one year to
file your patent application.
If you have to make a choicebetween releasing your product
and filing your patent, wellthen you know you're probably
going to want to start sellingyour product to make some money,
rather than filing anapplication and not being able
(13:56):
to you know, not being able torelease the product at all.
Speaker 2 (14:01):
That makes sense.
That makes sense.
So what I'm going to introduceright now is new to the podcast
is we have a segment called isit patentable, and what we'll do
in there to set this up is thatevery episode, mario will give
us an example of a product thatmight be common, maybe not
common, and we're going tounload it or unpack it to find
(14:23):
out if it's going to bepatentable in the eyes of a
patent attorney right here infront of you.
And the first example thatwe're going to use is I believe
Mario has the classic peanutbutter and jelly sandwich and to
find out which is hard tobelieve, right?
Is it patentable, mario?
What's your take on that?
Speaker 3 (14:42):
Yeah, so, as some people will recall, back in the
late 90s the Smuckers did get apatent on a peanut butter and
jelly sandwich.
The Smuckers did get a patenton a peanut butter and jelly
sandwich and so they talkedabout, you know, bread and some
filling and sealing the edges sothat the peanut butter and
jelly didn't leak out of thesandwich, and this was for
(15:03):
basically what is theuncrustable sandwich, which are
delicious, and so you know youthink you know I grew up eating
peanut butter and jellysandwiches all the time.
It's an old technology that youwould think that maybe it's not
patentable.
But the sealing of the edgespart was what carried the day
for them and did and ultimatelywas allowed as a patent.
(15:25):
There was a bit of controversy.
Eventually the patent was notallowed or deemed to be invalid
after it was issued, becausethere was such public outcry
about you know how can youpatent a peanut butter and jelly
sandwich?
But from a patent attorney'sperspective, they had claims
that the examiner didn't find tobe obvious.
(15:46):
So it was patentable.
Speaker 2 (15:48):
Wow, it was patentable and I love
Uncrustables.
In fact, I had two of themyesterday.
Speaker 3 (15:55):
I love those two.
Speaker 2 (15:56):
So, as we conclude the show here, what I want
everybody to consider is if youhave any questions, whether
you're peanut butter or jellysandwich, or your medical device
or your wheelchair, can bepatentable reach out to Mario at
Milano IP and he'll be sure todo a free consultation with you
so that you can get an idea ofwhere you sit.
Mario, do you have anything toadd to that in reference to
(16:16):
people reaching out to you?
Speaker 3 (16:18):
Yeah, always happy to talk about patents or any other
intellectual property needs.
Whether it's questions abouttheir own devices or questions
about other people's IP, Happyto talk.
Speaker 2 (16:27):
Awesome, and so this concludes our episode of the
Secure your Creations podcast,even if it's a peanut butter and
jelly sandwich, and we willtalk to you guys next time.
Speaker 1 (16:39):
Have a good day.
Thanks for tuning in to theSecure your Creations podcast.
Make sure to subscribe andfollow on YouTube and your
favorite podcast app so younever miss an episode.
Leave a comment, like or review.
We'd love to hear your thoughtsor answer any questions.
For more expert legal advice,visit wwwmilanoipcom.
(17:00):
Until next time, is itpatentable?
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